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European Union patent package approved by Parliament

European Union Parliament vote

On 11 December 2012 the EU Parliament voted for and approved the EU “patent package”.  This puts in place the legislation necessary for setting up an EU-wide unitary patent system and a unified EU patent court.

The package of legislation includes a regulation instituting the EU unitary patent, an associated language regulation and an agreement setting up the unitary patents court (UPC).  Both the unitary patent and the UPC will cover all member states of the EU apart from Spain and Italy at present.  However, Spain and Italy may join at any time.

It now seems highly likely that the unitary EU patent system and the UPC will be in operation in the near future, perhaps within the next two years.  Once the new legislation comes into force, we expect there to be a significant reduction in the cost of obtaining patent protection covering several EU member states.

Entry into force

Now that the patent package has been approved by Parliament, it must be ratified by the states involved.  The UPC agreement will come into force on the later of 1 January 2014 and the date on which thirteen states including the UK, France and Germany have ratified the agreement.  The unitary patent and the language regime will come into force at the same time as the UPC agreement.

Once the new system is in force, it will be possible to designate “EU” on existing EP patent applications at grant, resulting in a unitary EU patent.  The EU Commission is hoping that the first unitary EU patents will be granted in April 2014, but it seems likely to be later than this given the time taken by member states to ratify agreements and the complexity of setting up a new court system.

Cost savings

Opting for a unitary patent at grant removes the need to translate the patent.  This will result in very significant cost savings where a patent would otherwise be validated in several different EPC contracting states.  The EU Commission estimates that the cost of obtaining a patent covering the entire EU will drop from around €36,000 under the current system to around €5,000 under the unitary patent system.

Basic features of the new system

Unitary EU patents will be filed and processed pre-grant at the EPO in the same way as EP “bundle” patents are currently handled.  The existing EP patent system and unitary patents will co-exist, with applicants being able either to validate individual countries at grant or to designate “EU” to obtain a unitary patent.  As far as patent filings are concerned, it will be business as usual at the EPO.

The headquarters of the new UPC will be in Paris, with London and Munich branches of the central division of the court handling cases involving certain subject matter.  Specifically, the London branch of the central division will handle chemical cases, including pharmaceuticals.  The Munich branch will handle mechanical engineering.  It will also be possible to bring patent actions before local and regional divisions of the UPC, which are expected to be set up throughout the EU.

The UPC will be able to grant injunctions covering all 25 countries that are party to the UPC agreement, i.e. all member states of the EU except Spain and Italy.  When a counterclaim for revocation is made in an infringement case, the legislation gives local and regional divisions of the court the option to refer the counterclaim for revocation to the central division but proceed with hearing the infringement case.  This raises the possibility of obtaining a decision on infringement before validity is decided, in a similar way to the current German system.  The extent to which this will be possible will become clearer when the rules of procedure of the UPC are finalized.

Modifications to the legislation

The major change from earlier versions of the legislation is that the unitary patent regulation no longer includes provisions defining infringement (previous Articles 6-8).  The approved legislation leaves infringement to be decided under national law, which hopefully avoids references to the Court of Justice of the European Union (CJEU) on infringement issues.  It was felt that such references could slow down the operation of the UPC considerably.  However, there is ongoing debate about whether removing these provisions will have the desired effect.

We will keep you updated on further developments.  If you have any questions on the UPC or the EU unitary patent, please contact us at mail@mskpatents.com.